As is stipulated in the third paragraph of Article 22 in the Patent Law of the P.R.C., the term “inventiveness” applies when, compared with prior art, an invention possesses prominent substantive features and represents notable progress, or a utility model possesses substantive features and represents some progress.

Generally, the assessment of the inventiveness of an invention requires the combination of at least two prior arts. The combination here is often conducted by using one of the prior arts as the closest prior art, which is used to examine whether or not the other prior art(s) (or common knowledge or conventional technology, etc.) exhibit any distinctive technical feature(s) between the current patent application and the closest prior art.

The following case can serve as an example to further illustrate the process for assessing inventiveness in a patent application.

II. Case Introduction

In June 2013 the requester filed a request with the Patent Reexamination Board (hereinafter the “Board”) seeking a ruling of invalidation against the No.200810092407.6 invention patent, “mobile lifting crane with variable positioning counterweight” (hereinafter the “patent at issue”). In March 2014 after a review, the Board issued the No.22307 invalidation decision against the patent at issue, announcing the invalidation of for the whole invention patent, based on the ground that all of the claims of the patent at issue failed to meet the requirements for inventiveness stipulated in the third paragraph of Article 22 of the Patent Law.

To make the explanations simple and short, the author will only discuss the assessment process for the inventiveness in the independent Claim 1 of the patent at issue.

(I) Independent Claim 1 appears below:

“1. A method of operating the mobile lifting crane, wherein said crane comprises:

A vehicle with a mobile ground joint element, wherein said ground joint element is defined as an element used to engage the crane to the ground in the crane’s horizontal movement;

A turntable rotationally connected to the vehicle so that it can swing with respect to the ground joint element;

A jib installed at the front of the turntable by a pivot, wherein a lifting rope stretches out of the jib;

A mast installed at the turntable at its first end;

A mobile counterweight unit; said method comprises:

a) The operations of pickup, movement and placement of the crane in a loaded status, wherein during the pickup, movement and placement operations, it can help balance the load by moving the mobile counterweight unit to and from the front of the turntable by extending and retracting the linear actuating device; however, throughout the entire process of the pickup, movement and placement operations of the crane, the mobile counterweight unit is not supported by the ground; rather, it is supported indirectly on the vehicle by way of the mobile ground joint element.”

The closest prior art (hereinafter, the “Prior Art”): the published specification of the UK patent application GB2353515A, date of publication: 02/28/2001;

(II) Focus issues in dispute between the two parties

During the invalidation hearing for the patent at issue, the disputes between the requester and the patentee focused on the following issues:

(1) The requester asserted that the Prior Art disclosed the “linear actuating device” in Claim 1 of the patent at issue, while the patentee objected to this argument;

(2) The requester asserted that a person skilled in the art could easily design the distinctive technical feature of Claim 1 “the operations of pickup, movement and placement of the crane in a loaded status. During the pickup … linear actuating device” based on the Prior Art available to the public. The patentee also objected to this argument;

(3) The requester asserted that the Prior Art disclosed the technical features in Claim 1 “throughout the entire process of the pickup, movement and placement operations of the crane, …by way of the mobile ground joint element”; the patentee asserted that it was impossible to deduce the knowledge that Counterweight 6 may go without the support of the ground during the pickup, movement and placement operations of the crane from the specification of the Prior Art, and that these distinctive technical features are not common knowledge within the field.

(III) Major views of the invalidation decision:

(1) Determination of distinctive technical features

After an oral hearing attended by the requester and the patentee, the Board panel determined that Claim 1 of the patent at issue is different from the technical content disclosed by the closest Prior Art in that:

① The patent at issue defined that “during the process of the pickup, movement and placement operations of the crane, the extending and retracting linear actuating device changes the position of the mobile counterweight unit to the turntable and helps balance the load”;

In comparison, the Prior Art explicitly teaches that “the counterweight of the crane is determined by the current position of lifting hook 7 and/or the loaded status and/or the total load of the crane” and provides the detailed description of the approach to balance the “present total load” (load torque) by deciding the (mobile) counterweight based on the current position of the hook when the crane lifts a heavy load from Position A to Position B.

② The patent at issue defined that “throughout the entire process of the pickup, movement and placement operations of the crane, the mobile counterweight unit is not supported by the ground; rather, it is supported indirectly on the vehicle by way of the mobile ground joint element”;

There is no corresponding verbal description in the Prior Art; yet the appended drawing illustrates the corresponding structure, and the specification and the claims describe the same method as the patent at issue, i.e. to balance the changes in the total load during the operation of the cranes by moving the counterweight to and from the turntable.

(2) Determination of Inventiveness

Regarding the difference in point ①, the panel pointed out that first of all, it is common knowledge for persons skilled in the art that as the load of the crane equals the load weight multiplied by the arm of force and that the change in the total load (the load torque) is subject to changes in load weight (size) and the arm of force. Furthermore, as the technical content disclosed by the Prior Art asserts: “the counterweight of the crane is determined by the current position of lifting hook 7 and/or the load conditions and/or the total load of the crane”, it is common knowledge for persons skilled in the art that the most common cause of changes in the total load during the operation of the crane is the change in the total load (the load torque) caused by the gradual increase of the load from zero and the gradual decrease of the load to zero during the pickup and placement operations of the crane. Consequently, taught by the Prior Art, a person skilled in the art would be able to draw a direct and certain conclusion to conceive the technical solution of “moving the distance of the counterweight to the vehicle to balance the total load (load torque) of the crane when lifting and placing a heavy load”.

It is also the common knowledge for persons skilled in the art that when the crane moves or rotates in relation to the ground, the position of the lifting hook changes under the inertia of the load on the hook during start and stop, and that the change of position changes the load torque. Taught by on the Prior Art, a person skilled in the art could undoubtedly conceive the technical solution (i.e. the technical solution in Claim 1 of the patent at issue) of determining the (mobile) counterweight by the current position of lifting hook 7 (or the total load of the crane) when the crane moves in relation to the ground.

Regarding the difference in point ②, the panel pointed out that the Prior Art provided the technical teaching related to the technical feature “moving the distance of the counterweight in relation to the turntable in order to balance the load torque when the load torque changes.” According to the technical content disclosed by the Prior Art, the counterweight unit does not need to be directly supported by the ground; it is supported indirectly on the ground by way of the track. A person skilled in the art could certainly conceive this solution based on the content disclosed by Exhibit 3.

From the foregoing, the panel concluded that a person skilled in the art would be capable of, with the support of the Prior Art and with a combination of his common knowledge, conceive the technical solution defined in Claim 1 of the patent at issue without any inventive step; in other words, the technical solution of Claim 1 of the patent at issue failed to meet the requirements of inventiveness stipulated in the third paragraph of Article 22 of the Patent Law, because it lacks prominent substantial features and does not represent notable progress. Accordingly, the patentee’s assertion that Claim 1 possesses inventiveness cannot be established.

III. Case Analysis

In the foregoing case, when hearing the invalidation request against the patent at issue, the panel took into full consideration the technical content disclosed by the Prior Art, including the technical content of the Prior Art that was clearly documented (explicitly published), the technical content deduced from related documentation and/or appended drawings (implicitly published) and the technical content that can be conclusively inferred from common knowledge with the support of the technical content of the prior art (implicitly published). The panel also considered the technical content disclosed by the Prior Art, and issued a decision invalidating Claim 1 of the patent at issue.

The author’s view toward this case is that the technical content explicitly disclosed in the appended drawings and/or the literal description of the prior art is not enough by itself to assert a difference between the patent at issue and the closest prior art in terms of the inventiveness of a claim in the application and the invalidation process with respect to the patent. The content disclosed by the literal description and/or appended drawings of the prior art may not be convincing enough. In the foregoing case, the panel adopted an approach of considering technical content not explicitly disclosed by the prior art but implicitly published instead. This mode of analysis has important implications. By the same token, in the drafting of patent application documents, especially for the drafting of claims, an applicant should consider using definitions with appropriate scopes of protection. Although it is possible to expand the scope of protection by only defining the functionality (Means-Plus-Function), this approach might risk the inappropriate inclusion of common knowledge or common technological methods, which would in turn lead to adverse results in the review or the invalidation proceeding over the novelty /inventiveness of the claim of rights.

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